1. Why register a trademark?
Once a trademark is registered, it is easier to enforce and exploit through licensing and safer to use in the United Kingdom. (For these purposes, the United Kingdom excludes the Channel Islands). The risk of not registering a trademark is that it allows others to register an identical or similar mark that could impede the ability to use or register the mark in the United Kingdom. Registration is prima facie evidence of ownership and validity.
2. Is registration of a mark mandatory?
Registration is not compulsory, but it is advisable because the proprietor gains a legal monopoly in the sign that is used in trade to identify specified goods or services. Furthermore, it is more expensive to enforce rights in an unregistered trademark. Registration of a trademark itself is comparatively inexpensive.
3. What is registrable?
Any 搒ign?that can be graphically reproduced and is capable of distinguishing the goods or services of one person from another, such as words, names, devices and logos, can be registered. It is difficult but also possible to register certain three-dimensional shapes, colors, sounds, and smells.
4. Can a trademark be registered for retail and like services?
Yes. Trademarks can be registered for a variety of services, including retail services. A specification for the latter would typically read 搕he bringing together, for the benefit of others, of a variety of goods (excluding the transportation thereof), enabling customers to conveniently view and purchase those goods.?/span>
5. How are domain names protected?
Any word, including a trademark, may be registered as a domain name, but this registration will not offer the proprietor any protection except that the exact domain name cannot be registered to a third party. Having a trademark does offer some degree of protection against cyber-squatters under the ICANN dispute resolution process. Anyone can apply to register a domain name through a variety of Internet websites. Registrations can be found at ICANN (http://www.icann.org/registrars/accredited-list.html) or at Nominet UK (http://www.nic.uk). Nominet UK also provides a dispute resolution service.
6. Should a trademark be searched before filing?
Applications are officially searched and compared against prior national, Community, or international marks, but this usually takes one or two months. If the applicant does not make a prefiling search, and the official search is clear, the cost of the prefiling search is saved. However, if the official search is not clear, the prefiling search could have saved the applicant the cost of filing an application. If the mark is to be used in many countries, a prefiling search is recommended, at least in major countries, to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else.
7. How do I file?
An applicant may file either via a home trademark attorney or by directly contacting a United Kingdom trademark attorney.
8. What information must be provided before filing?
Before filing, an applicant must provide one specimen of the mark unless the mark can be represented in plain block capital letters, full details of the applicant, a list of goods/services to be covered, and notice of whether the mark is or will be used. There are no documents that must be signed.
9. Is local registration the only option, or are there international alternatives?
A United Kingdom application only has effect in the United Kingdom. Madrid Protocol and Community registrations are also available. The United Kingdom is not and will not be a party to the Madrid Agreement. It has, however, ratified the Madrid Protocol (see Guides on the Madrid Agreement and Protocol and the Community Trade Mark).
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
No. It is only necessary to file one application and pay extra class fees.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within the six months preceding a United Kingdom application, the filing date of the home application can be claimed as the filing date in the United Kingdom. A Community or Protocol registration can be based on a United Kingdom registration or application (see Guides on the Community Trade Mark and the Madrid Agreement and Protocol). Similarly, if an applicant抯 home country is a member of the World Trade Organization it should be possible to claim the home filing date (provided that the application is filed within six months of the home filing date). It is advisable to consult a United Kingdom trademark attorney in this situation.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
A mark must be used within five years of the date the registration is published in the Official Journal. If not, the registration will become vulnerable to cancellation for nonuse. However, late use after the five-year term may cure nonuse, provided that in the interim no third party has filed an action for cancellation for nonuse.
13. Is using a variation of the trademark allowable?
If the difference is slight and does not alter the substance of the registration, use of the different form would not affect the enforceability of the applicant抯 registration. However, if the difference is significant, a new application may be necessary because it is not possible to amend a registration and the existing registration will be impossible to enforce. A United Kingdom trademark attorney should be consulted on this issue.
14. Is there any advantage to using a trademark before filing an application?
Yes. The United Kingdom recognizes prior use, and, provided such prior use qualifies as substantial and nationwide, the prior user may cancel subsequent marks and sue for passing off, even in the absence of registration. However, the prior user has the burden of proving exclusive rights in the mark by providing substantial evidence, which implies a higher cost than that of a registration. The prior user also runs the risk that he may unknowingly infringe a third party抯 rights through his prior use of the mark.
15. For an application to be valid, are there any particular requirements that must be met?
No. Anyone using, or having an intention to use the mark, either directly or via a licensee, may apply.
16. What information is first published about an application/ registration and when is it published?
When accepted, full details of the application are published in the Official Journal between two and three months after the application is filed.
17. What kind of examination (if any) will a new application undergo?
An application is examined by the Registry to determine if the mark complies with local rules as to distinctiveness and deceptiveness. A search is also conducted for prior conflicting marks that can be cited against an application. If the applicant fails to convince the examiner that the prior citations are irrelevant, the application will be refused.
18. What response to official objections is required?
The applicant is entitled to reply within a given period that might be extended. If objections are confirmed, the applicant is entitled to appeal. The goods/services of the application might need to be amended and consent from the proprietors of cited registrations might be required.
19. How long is the registration process?
The registration process usually takes approximately 12 to 18 months. If an opposition is filed, it may take much longer.
20. What rights does an application confer?
The application can be cited against, or used to oppose, a subsequent conflicting application, but cannot form the basis of an infringement allegation in court.
21. What is the legal effect of a registration?
The registrant can sue third parties for infringement of the trademark and also prevent or cancel the registration of subsequent marks. The registrant also can request the seizure of counterfeits at Customs and obtain civil and/or criminal penalties against infringers.
22. Can an application be opposed or cancelled by third parties?
Yes. Opposition to an application must be filed within three months of publication of the application in the Official Journal and on the grounds of nondistinctiveness, deceptiveness, or conflict with prior rights. Third party observations also can be filed.
23. Can an application or registration be assigned?
Yes. An application and a registration may be assigned for all or some of the goods/services covered.
24. Must an assignment include goodwill?
No. The assignment may be either with or without goodwill.
25. Does an assignment have to be recorded?
Recordation is not compulsory, but if an assignment is not recorded, a later recorded assignment may have priority and the assignee may be prevented from recovering full damages if he sues an infringer.
26. Can an application or registration be licensed?
Yes. A license can be exclusive or nonexclusive, for both an application and a registration, for all or some of the goods/services covered, and for the whole or part of the territory. It is advisable to consult a United Kingdom trademark attorney in such a situation.
27. Does a license have to be recorded?
Recordation is not compulsory, but if a license is not recorded, a later recorded license may have priority. Again, failure to record a license may affect a licensee抯 right to recover damages in an infringement action.
28. What is the territorial limit of a registration?
A United Kingdom trademark registration extends to Great Britain, Northern Ireland, and the Isle of Man. It is possible to register a United Kingdom Trademark registration in some countries, e.g., Channel Islands, Gibraltar, and Belize.
29. How long does a registration last?
The term of registration is ten years from the date of application, and is renewable for ten-year periods.
30. What is required to renew a registration?
Payment of a renewal fee is the only requirement. Payment can be made late in certain circumstances.
31. Is it necessary to indicate a trademark registration on goods or services?
No. Marking is not compulsory, but it is recommended; e.g., 揜egistered Trade Mark?or 摦? It is a criminal offense to misrepresent that a trademark is registered.
32. Does the International Classification System apply?
Yes.
33. Is your national office accessible online?
Yes, at http://www.patent.gov.uk. It is possible to search for details of a registration or application online. The website also provides further information on UK trademark law. |
